Tuesday, 29 July 2014

Is a communication issued using Form 2001A an act of the examining division pertaining to the examination in accordance with Article 94(3) EPC? We revisit J 9/10.The applicant appealed against the decision refusing European patent application No. 05254923.5, published as EP 1 640 913 A1.The examining division had refused the application on the grounds that the subject-matter of the claims lacked novelty or did not involve an inventive step over the prior art.

In the appeal, the appellant essentially argued that the first-instance proceedings were tainted by substantial procedural violations because the examining division had not issued a formally correct communication under Article 94(3) EPC in view of the case law created by decision J 9/10.In the present case, the communication was issued using Form 2001A. The appelant cited, amongst others, J 9/10 according to which a form 2001A is not an act of the Examining Division.Background: between 2005 and 2012, communications were issued on EPO Form 2001A in cases in which the applicant had not responded to a negative search opinion drawn up before 1 April 2010. Although J 9/10 dealt with the request for refund of the examination fee, its decision prompted the EPO to issue a notice (OJ EPO 2013, 16) on the time limit for filing voluntary divisionals.Reasons for the Decision

1. The appeal is admissible.

2. Remittal to the department of first instance

2.1 Pursuant to Article 11 of the Rules of Procedure of the Boards of Appeal ("RPBA"; see OJ EPO 2007, 537) "A Board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise." The board considers that the term "fundamental deficiencies" referred to in this article and the notion "substantial procedural violation" in Rule 67 EPC 1973, first sentence (now Rule 103(1)(a) EPC) are synonymous (see the German versions of the two provisions where the terms are virtually identical: "wenn das Verfahren ... wesentliche Mängel aufweist" and "wesentlicher Verfahrensmangel", respectively).

The appellant asserted that the proceedings before the examining division were tainted by substantial procedural violations because, in view of the case law created by decision J 9/10, the examining division had failed to issue a formally correct communication under Article 94(3) EPC. Furthermore, the search opinion was very short, and the objections raised by the examining division were not sufficiently clear and inadequate to enable the representative to discuss the issues with the applicant. This meant that the right to a fair hearing had been denied.

2.2 In decision J 9/10 (see point 2.4 of the Reasons) the legal board had to decide in particular what kind of act or acts amounted to the beginning of substantive examination. In this context the board held that a communication using EPO Form 2001A which was attributable only to the formalities officer did not constitute an act of the examining division pertaining to the examination in accordance with Article 94(3) EPC. Such a communication could thus not be regarded as the beginning of "substantive examination" pursuant to Article 10b(b) of the Rules relating to Fees 1973 (see point 2.9 of the Reasons). The board also held in point 3.2 of the Reasons that the formalities officer's error of judgment did not constitute a substantial procedural violation.

2.3 In the present case, the communication dated 21 September 2006 was issued by the EPO using EPO Form 2001A. The applicant replied to it, addressing the objections made in the earlier European search opinion (essentially lack of conciseness, novelty and inventive step). In the board's view, this search opinion may have been concise, but was not too short for the skilled reader to understand the objections. Subsequently, the applicant also replied to the objections raised in the summons to oral proceedings. The applicant thus obviously regarded the two official communications as invitations by the examining division to file observations and amend the application. This sequence of events reveals that the representative was in a position to discuss the issues with the applicant after the communication of 21 September 2006 was issued, and to draw up pertinent replies. Furthermore, the applicant chose not to attend the oral proceedings, in which the examining division eventually refused the application. There is thus no indication of insufficiently clear or inadequate examination proceedings infringing the applicant's right to be heard.

2.4 Lastly, the appellant did not complain that its right to be heard had been infringed in the examination proceedings in any other way. The board too sees no such violation, or any other indication of a fundamental deficiency in those proceedings, which would justify remittal (Article 11 RPBA).

2.5 Nor is remittal to be ordered due to the fact that the primary examiner may not have authenticated the communication using EPO Form 2001A. That may run counter to the findings in J 9/10, which have been summarised above. Yet, as explained, the board has been unable to discern any indication of an insufficiently clear or an inadequate examination starting de facto with the communication using EPO Form 2001A. As a consequence, there would be no causal link between any authentication of the communication using EPO Form 2001A by the formalities officer instead of the primary examiner and the applicant's need to file an appeal. In the absence of such a causal link, remittal under Article 11 RPBA is not appropriate, in analogy to what has been held in the context of the reimbursement of the appeal fee due to a substantial procedural violation (see J 9/10, point 3.1 and the decision cited there).

The board also agrees with J 9/10 (at point 3.2) in that, even if the sole ground of appeal had been the fact that the communication using EPO Form 2001A may have been authenticated not by the primary examiner but by the formalities officer, that would not constitute a procedural violation or fundamental deficiency, but an error of judgment on the part of the formalities officer.

2.6 As a consequence, the request for remittal to the first instance because of fundamental deficiencies in the first-instance proceedings has to be refused.

(...)

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T223109.20140423 . The whole decision can be found here. The file wrapper can be found here.

Friday, 25 July 2014

This appeal decision relates to a discussion of insufficiency of disclosure in opposition proceedings. In this opposition proceedings, all requests were rejected because it was not well defined how the claimed "viscosity" could be determined. The Board also discusses this subject with reference to previous case law. Furthermore, in the appeal the patent proprietor tried to argue that viscosity was not an important feature of the claim, however, contradictory arguments were provided earlier and statements in the patent application seems to contradict the new line or arguments.

Citations from the decision:Catchwords:An ill-defined parameter in a claim may lead to
insufficiency of disclosure if this parameter is relevant for solving
the problem addressed in the patent (T 593/09 followed). If, in such a
situation, the patent specification states that the ill-defined
parameter is relevant and the patent proprietor initially argued along
those lines, then, normally it cannot argue, later on in the
proceedings, that this parameter does not matter (points 2.6.1 and 2.6.2
of the Reasons).

[...]

The opposition division's position can be summarised as follows:None
of the requests met the requirements of Article 100(b) EPC. It had not
been substantiated that there was a particular method in the prior art
which had to be used to determine the viscosity. The skilled person was
therefore faced with a number of choices as to which procedure to use,
choices which influenced the outcome of the measurement. While claim 1
specified which temperature had to be employed, further conditions such
as the selection of the viscosimeter, as well as the container used and
the sample pre-treatment, had to be selected and there was no
unambiguous instruction on these choices. In fact, given that D10
(section 11 "Report") specified that these conditions had to be
controlled, the skilled person would infer that these conditions had an
appreciable effect on the measurement. It also appeared from D10 that
the spindle/speed combination had a major bearing on the outcome of the
measurement. This was further demonstrated by the proprietor itself in
its letter of 8 August 2011, which showed large differences in the
measured viscosity at different spindle speeds. It could therefore only
be concluded that it had not been proven that the skilled person knew
which method to use, and, within a single method, the number of
selections required inevitably led to different results. Reproducing the
invention thus required a significant effort which went beyond any
normal trial and error. As the viscosity was an essential parameter in
practising or reproducing the invention, without proper instruction on
this parameter the skilled person was not able to perform the invention.

Reasons for the Decision

[...]

2. Sufficiency of disclosure (Article 100(b) EPC)

2.1
Claim 1 is directed to a composition for coating foodstuffs which
comprises a galactomannan, such as guar gum, and 2 to 7 wt% of alginate,
and has a viscosity of 80-110 Pas at a temperature of 20°C (for the
exact wording of claim 1, see point IV above).According to the
respondent, the viscosity parameter in claim 1 is ambiguous since the
patent does not give the method for identifying it, and this ambiguity
means that the invention underlying the patent is insufficiently
disclosed.

2.2 The present case is similar to the one underlying
decision T 593/09 (not published in OJ EPO), in which sufficiency of
disclosure had likewise to be decided in relation to a parameter ("LTC
temperature") for which the measurement method was not sufficiently
defined in the patent. As set out in this decision (catchword and point
4.1.4 of the Reasons), the ambiguity of a parameter in a claim is not,
by itself, a reason to deny sufficiency of disclosure. What is decisive
for establishing insufficiency within the meaning of Article 83 EPC is
whether the parameter, in the specific case, is so ill-defined that the
skilled person is not able, on the basis of the disclosure as a whole
and using his common general knowledge, to identify without undue burden
the technical measures necessary to solve the problem underlying the
patent.As set out in this decision, in order to find out whether
this condition for insufficiency of disclosure is met, a four-step
approach can be applied. Firstly, the problem to be solved by the
invention in the patent is identified (point 2.1 of the Reasons),
secondly the relevance of the attacked parameter for solving this
problem is determined (point 2.2 of the Reasons), thirdly it is analysed
whether the parameter in the claim is indeed ambiguous (points 3.1 to 3.5 of the Reasons) and fourthly, if the parameter is ambiguous, it is
determined whether due to this ambiguity and the relevance of the
parameter for solving the problem, sufficiency of disclosure has to be
denied (points 3.6 and 3.7 of the Reasons). This four-step approach will
be applied in the present case as well (points 2.3 to 2.6 below).

2.3
The opposed patent relates to compositions for coating foodstuffs
(paragraph [0001]). The objective of the invention underlying the patent
is the provision of a coating composition with which a sufficiently
robust and stable coating can be formed using the extrusion or
co-extrusion techniques that are commonly used in the food industry
(paragraph [0013]).

2.4 As set out in paragraph [0004], the
rheological properties, and especially the viscosity, of the coating
composition play a major role in achieving the objective of the opposed
patent. If the viscosity is too low, the composition deliquesces before
it can be gelled, so that no cohesive coating can be formed. Too high a
viscosity can lead to problems in extrusion and to undesirable ripping
of the coating. To achieve this objective, the coating composition must
have a viscosity of 80-110 Pas at a temperature of 20°C (claim 1 and
paragraph [0029]).The skilled person who wants to carry out the
invention, i.e. to obtain coating compositions with which a sufficiently
robust and stable coating can be formed, thus needs to determine the
viscosity of the coating composition in order to check whether it is
within the required range.

2.5 It needs to be examined, as a next step, whether the viscosity is indeed ambiguous.

2.5.1
In this respect, it was acknowledged by the appellant that the patent
does not contain any information as regards the type of measurement
device or measurement parameters to determine the viscosity, that there
are various measurement methods available to the skilled person and that
the measured viscosity values depend on the type of measurement device
and, for a given device, on the measurement parameters.

2.5.2 The
appellant argued however that the skilled person was nevertheless able
to find out which method and parameters to use in order to determine the
required viscosity. All that the skilled person needed to do was to
calibrate the measurement characteristics on the basis of the examples
of the opposed patent. More specifically, the skilled person had simply
to prepare the compositions of these examples and then to "tune" the
measurement parameters until the viscosity values reported in these
examples were obtained. The appellant in this respect referred to D12
and D13, where two independent test institutes had reworked the examples
of the patent (D12: examples 1 to 4, D13: examples 1 to 3 and 5) and,
by tuning the measurement frequency, had been able to obtain the
reported viscosity values. The measurement method thus found could be
used to check whether the viscosity of any other given coating
composition was as required in claim 1. By doing so, compositions
suitable to provide robust and stable coatings could be obtained.Firstly,
however, it is nowhere shown in D12 or D13 that the compositions
prepared therein are indeed suitable to prepare robust and stable
coatings. In fact, it is explicitly stated by the authors of D12 that
"[F]urther work described in the patent concerning the application of
the gels to be used as a coating of sausages was not part of the
investigations [of D12]".Secondly, it was necessary in the tests
reported in D12 and D13 to experiment with various measurement devices
that are typical for university departments specialised in viscosity
measurement and only a sophisticated multi-step analysis in the end led
to viscosity values that were at least close to those in the examples.
Such a calibration could thus only be done by a person specialised in
the field of viscosity measurement. The patent is however not directed
at an analytical scientist specialised in viscosity measurement but to
food technologists (paragraph [0001]: "The invention relates to a
composition for coating foodstuffs..."). Hence, the skilled person in
the art relevant to the patent would not be able to use the calibration
techniques applied in D12 or D13.Thirdly, in fact a calibration
of the viscosity measurement is, as a matter of principle, not possible
on the basis of the examples of the patent. Such a calibration
presupposes that the measurement parameters are the only variables in
the examples that determine the viscosity. As will be shown in the
following, this condition is not met:All examples of the patent
use guar gum without specifying the type of guar gum. As evidenced by
D14, D15 and D16, different guar gums are available. As shown in D17
(table on last page), the viscosity of the compositions used in the
examples depend on the type of guar gum. More specifically, in D17, the
viscosities of three mixtures each containing a different guar gum are
determined, namely containing (i) alginate and Guar HV (a guar gum
having a viscosity of 6500 ctp) (test 1), (ii) alginate and Guar
standard (3500 ctp) (test 2) and (iii) alginate and depolymerised Guar
(50 ctp) (test 3). The viscosity of these mixtures was 1360 Pas for
mixture (i), 497.5 Pas for mixture (ii) and 185.6 Pas for mixture (iii),
and thus depends on the type of guar gum used. Consequently, the fact
that the authors of D12 and D13 were able to tune the measurement method
such that the viscosities reported in the corresponding examples were
obtained does not mean that it is this method that is to be used
according to the patent. On the contrary, it could equally be a
different method, if a different guar gum was used in the examples.For
these reasons, the appellant's argument that the measurement method for
the determination of the viscosity can be calibrated and thus
identified on the basis of the examples of the patent must fail.

2.5.3
As regards the dependence of the viscosity on the type of guar gum
shown in D17, the appellant's expert Mr Knoch argued that he had doubts
about the correctness of these values, since no details were given in
D17 about how the experiments had been carried out. This submission can
however not be taken into account in view of the fact that it was made
at the latest possible time during the appeal proceedings, while the
report had already been available for two years and furthermore since
the doubts raised by the expert were not substantiated. Irrespective of
this, even if there were some doubt about the absolute values reported
in D17, this test report shows at least qualitatively a dependence of
the viscosity on the type of guar gum.

2.5.4 The appellant also
argued that the skilled person would use a standard guard gum in the
examples of the patent and that this standard guar gum had a viscosity
between 3000 and 5000 cps, as evidenced by D14. The skilled person would
thus know which type of guar gum to use and therefore would be able to
calibrate the viscosity measurement method on the basis of the examples.The
board does not find this argument convincing. First of all, nowhere
does the patent indicate that indeed standard guar gum is used in the
examples. Secondly, even if, in the appellant's favour, it is assumed
that the skilled person reading the examples of the patent would indeed
use standard guar gum, it would still not be possible to use the
examples to calibrate the viscosity measurement method. More
specifically, as acknowledged by the appellant, standard guar gum is
available within a viscosity range of 3000 to 5000 cps. Thus, the type
of the guar gum would still be a variable in the examples that would
affect the viscosity of the resulting coating composition.

2.5.5
Consequently, on the basis of the patent and his common general
knowledge, the skilled person is unable to identify the measurement
method by which the viscosity values required by claim 1 have to be
determined. In view of the fact that the values depend on the type of
measurement method and parameters, the skilled person cannot tell
whether or not a given composition has a viscosity as required by claim
1. The viscosity in claim 1 is thus ambiguous.2.6 In view of its
ambiguity, the viscosity is not available as a selection criterion to
identify suitable coating compositions that solve the problem underlying
the opposed patent. The skilled person therefore has to identify
suitable compositions by trial and error. Hence, the patent is nothing
more than an invitation to perform a research programme.

2.6.1
While the appellant during the oral proceedings initially acknowledged
that the viscosity as required by claim 1 was indeed essential to solve
the problem underlying the patent, it later on presented a second line
of argument starting from the assumption that the viscosity was in fact
not relevant. According to this line of argument, all that was needed to
carry out the invention was to select the preferred galactomannan,
namely guar gum, in the amounts indicated in the description of the
patent. For instance, the skilled person simply needed to repeat the
examples of the opposed patent and choose a standard guar gum to obtain a
suitable coating composition. Hence, in order to carry out the
invention the skilled person did not need to know how to determine the
viscosity. In fact the viscosity had only been included in claim 1 to
determine later on whether a given composition infringed the patent or
not.

2.6.2 The board does not find this argument acceptable. The
proprietor is not free to choose a particular approach when drafting the
patent and when arguing its case, and then to change it later on when
it realises that this approach might fail. So if the proprietor (and in
the present case appellant) chooses to include a statement when drafting
the patent that, in order to solve the problem underlying the patent,
the coating composition must have a certain viscosity, then normally it
cannot argue, later on in the proceedings, that in fact the viscosity
does not matter.Furthermore, even if one accepts the appellant's
argument, the patent does not teach the skilled person how to obtain a
suitable coating for any composition different from those of the
examples, for instance a composition containing a galactomannan
different from guar gum. Since, due to its ambiguity, the viscosity is
not available as a selection criterion to identify suitable components
and amounts for these different compositions, the conclusion remains
valid that the skilled person has to rely on trial and error such that
the patent is nothing more than an invitation to perform a research
programme.

[...]

2.8 The invention underlying claim 1 is thus insufficiently disclosed.OrderFor these reasons it is decided that:The appeal is dismissed.This decision has European Case Law Identifier:ECLI:EP:BA:2014:T240311.20140430. The whole decision can be found here. The file wrapper can be found here. Photo obtained from FreeDigitalPhotos.net.

Tuesday, 22 July 2014

This is a decision by the Enlarged Board of Appeal in consolidated proceedings on six petitions for review - R
5/13, R 9/13, R 10/13, R 11/13, R 12/13 and R 13/13, all filed against decision
T 1760/11. The petitioners argued essentially a fundamental infringement of the right to
be heard (Articles 112a(2)(c) and 113(1) EPC). All petitioners in essence argued
that the Board not only "fundamentally erred" in denying that document D1 was a
feasible starting point for the assessment of inventive step according to the
problem-solution approach. In addition, the petitioners argued, choosing document D2 instead of document
D1, the Board made a number of "basic errors in the evaluation of the technical
information before it and the application of established EPO case law to that
information". The petitioners argued that the Board took a decision without hearing the petitioners' complete case by concluding that the subject-matter claimed involved an inventive step, after the debate on the issue of inventive step in the light of document D2 as
the closest prior art, without a debate on the ground of lack
of inventive step starting from document D1. The petitioners further argued that, in addition, the Board applied the problem-solution approach wrongly in
allowing only one document as the starting point for discussing inventive step,
where the case law allowed for more than one document to be considered as the
closest prior art and for a discussion of lack of inventive step starting from
any of those documents. That denial implied an infringement of the right to be
heard according to Article 113(1) EPC. The petitioners further argued that, in addition, the Board based its decision not to consider document D1 as a
starting point for inventive step merely on the parties' written submissions, and that the Board hereby deprived the petitioners of their right fully to present their
arguments by not giving them the opportunity to
present oral submissions on this point, even if the Board had a different view.The decision extensively discusses how far the right to be heard extends, and when it is violated - as to procedural aspects and substantive aspects to the merits. The decision also emphasizes that a petition for review can not be used to assess whether the BoA correctly applied substantive patent law, in particular in using the problem-solution approach.

Reasons for the Decision

1. All petitioners are adversely affected by the decision under review. The
provisions of Article 112a(4) EPC and Rule 107 EPC are satisfied.

Scope of the petitions

2. The petitioners invoke multiple grounds for their respective petitions for
review.

3. The petitions for review are founded mainly on the allegation that the
appeal proceedings leading to the decision under review involved a fundamental
infringement of the petitioners' right to be heard (Articles 112a(2)(c) and
113(1) EPC) in that the Board took its decision on the patent proprietor's first
auxiliary request without allowing the petitioners to complete their submissions
on the ground of lack of inventive step, in particular in view of document
D1.

4. Additionally, the petitioners claim that the Board should have followed
their requests to refer the questions submitted by them concerning the selection
of the closest prior art and the concept of res judicata to the Enlarged Board
of Appeal according to Article 112(1)(a) EPC, or that the Board either ignored
the requested referral of the second question or failed to reason why it
rejected the referral.

[...]

Allowability of the petitions for review

9. The petitions essentially invoke the ground of petition for review
according to Articles 112a(2)(c) and 113(1) EPC.
Article 113(1) EPC provides:
"The decisions of the European Patent Office may only be based on grounds or
evidence on which the parties concerned have had an opportunity to present their
comments."

10. The petitioners submit that the Board decided on the appeal in
infringement of Article 113(1) EPC in a manner that gave the petitioners no
opportunity to present orally all their arguments on the issue of inventive step
of the claims according to the patent proprietor's first auxiliary request.As established in case R 3/10 of 29 September 2011 (Reasons, point 2.10),
"the right to be heard is a fundamental right of the parties which has to be
safeguarded, irrespective of the merits of the party's submissions. The
necessity to respect it is absolute and therefore cannot be made dependent on a
prior assessment of the merits of the party's submissions, which in the present
case would involve an assessment of the degree of likelihood that the arguments
of the petitioner would have convinced the Board to acknowledge inventive step.
It is the very essence of the right to be heard that the party is given a full
opportunity to defend its case and to persuade the deciding body that its
position is the correct one. This right would be undermined if it were made
dependent on an evaluation as to whether the party's standpoint is likely to be
justified. In order to answer the question of whether a fundamental infringement
of the petitioner's right to be heard occurred as a result of the petitioner's
not having been heard on inventive step, it is therefore irrelevant whether the
respondents are right in their assessment of the clear obviousness of the
claimed solution."

11. The petitioners' key objection lies with the Board's decision to choose
document D2 as the (only) closest prior art, rather than documents D1 and D11,
which had been proposed by the petitioners and the patent proprietor
respectively, and to limit the discussion of the issue of inventive step of the
claimed subject-matter according to the patent proprietor's first auxiliary
request on document D2 as the (only) starting point in applying the
problem-solution approach. According to the petitioners, had the Board allowed a
continued discussion of the issue of inventive step starting from document D1,
the petitioners would have demonstrated that the subject-matter of the claims
according to the first auxiliary request was obvious to the skilled person.
Since the Board refused that continued debate, it deprived the petitioners of
the opportunity to present arguments on this matter.

12. In support of this, the petitioners in their concluding submissions
during the oral proceedings put forward essentially three lines of argument:(1) that the closest prior art could only be determined at the end of a
complete discussion of inventive step starting from all the documents that a
party or the parties chose to rely on (point 15 below);(2) that the Board failed both to inform the parties of its intention to
select of its own motion document D2 and to invite the parties to comment on
this in order to convince the Board of the inaccuracy of its choice (point 16
below);(3) that document D1 should also have been considered as a realistic starting
point for the discussion of inventive step (point 17 below).

13. Before investigating the aforementioned arguments, the Enlarged Board
notes that the examination whether or not the subject-matter of a patent claim
involves an inventive step according to the well-established problem-solution
approach is a matter of substantive law. That is equally true for the
determination of the closest prior art as the first step in the multi-stage
method of the problem-solution approach, whether one document alone or a
plurality of documents was taken as the starting point or most promising
springboard aiming at the invention.

14. In view of this, it has to be borne in mind that review proceedings based
on Article 112a(2)(c) EPC are confined to procedural defects so fundamental as
to be intolerable. It follows from the essential interest of legal certainty
that appeal proceedings leading to a final decision shall be re-opened only if
one of the grounds provided for in Article 112a EPC applies. The petition for
review is no means to review the correct application of substantive law
(consistent case law since R 1/08 of 15 July 2008, citing the travaux
préparatoires, and R 2/08 of 11 September 2008).

15. In respect of the first line of argument, the Enlarged Board cannot
follow the petitioners' view point that the closest prior art  at least in the
present case  could have been chosen only after all stages of the
problem-solution approach were completed.
According to the established case law of the boards of appeal, the
problem-solution approach is the key element for the assessment of inventive
step and is the one which is applied first and foremost. It follows a clear
method consisting of three main stages, of which the determination of the
closest prior state of the art is the first (see Case Law of the Boards of Appeal, 7th edition 2013, section I.D.2., p. 165 et seq.).
The petitioners put forward that the first stage of the problem-solution
approach could and should have been concluded only after the other two stages
had been gone through (i.e. after the "objective technical problem" to be solved
had been established and after it had been considered whether or not the claimed
invention, starting from the closest prior art and in view of the objective
technical problem, was obvious to the skilled person). In other words, the
petitioners argue that they should have been allowed to discuss all the issues
of inventive step of any stage of the problem-solution approach in respect of
all possible starting points they wished to rely on, despite the fact that the
Board structured the discussion by first establishing which document or
documents constituted the most promising starting point for an obvious
development leading to the invention. In this, the Board not only followed the
sequence for the debate announced in its communication annexed to the summons to
oral proceedings (page 8, second paragraph; page 9, last paragraph), but by
doing so it also systematically applied the standard method of the
problem-solution approach.
In so far as the petitioners alleged that the Board deviated from the
problem-solution approach by relying on a criterion that was irrelevant for the
determination of the closest prior art (i.e. the Board's opinion that "taking
document D1 as a starting point for the analysis of inventive step relies on a
hindsight knowledge of what is claimed and is therefore inappropriate for an
objective assessment of inventive step"; Reasons page 56), this allegation
concerns a substantive matter.However, petition for review proceedings may not be used to review the
exercise by a Board of its discretionary power if that would involve an
impermissible consideration of substantive issues (see R 1/08 of 15 July 2008,
Reasons, point 2.1; R 10/09 of 22 June 2010, Reasons, point 2.2; R 9/10 of 10
September 2010, Reasons, point 10; R 13/11 of 20 April 2012, Reasons, point
4).In petition proceedings, the Enlarged Board cannot act as a third instance or
second-tier appellate tribunal, nor can it examine whether or not the
substantive conclusions arrived at by the Board were justified; under no
circumstances may the petition for review be a means to review the correct
application of substantive law (see Case Law, supra, section IV.E.9.2.4.b), p.
1066 et seq.; R 1/08 of 15 July 2008, Reasons, point 2.1; R 2/08 of 11 September
2008, Reasons, point 5; R 9/08 of 21 January 2009, Reasons, point 6.3), which
includes issues falling within the discretion of the Board (R 10/09 of 22 June
2010, Reasons, point 2).However, that is exactly what the petitioners seek by requesting the Enlarged
Board to reconsider the appeal proceedings on its merits and thereby to put its
evaluation of the merits above that of the Board. A technical review of the
Board's evaluation of inventive step in terms of whether it is objectively
correct or appropriate, is outside the jurisdiction of the Enlarged Board.Finally, the Enlarged Board cannot accept the petitioners' contention that a
party, in principle, should be allowed to discuss any particular issue that it
relies on or even forms the subject of a request.
Neither the EPC nor the Rules of Procedure of the Boards of Appeal provide
any legal basis for such a general approach in appeal proceedings, in particular
in inter partes appeal proceedings. Nor is the existence of any such entitlement
supported by the principle of party disposition. That principle relates merely
to the parties' right of disposal over their requests by advancing, withholding
or withdrawing them as they see fit.More relevant to the present case is another principle of appeal proceedings,
the principle of procedural economy, which requires a board of appeal to focus
on those points that are relevant for the decision. In the present case, the
Board considered that the case could be decided in respect of the issue of
inventive step by systematically applying the problem-solution approach stage by
stage. Thus, it systematically limited its decision-making and accordingly the
discussion with the parties to determining the closest prior art first, before
discussing the other aspects of the inventive step of the subject-matter claimed
according to the patent proprietor's first auxiliary request.
Consequently, the Enlarged Board does not follow the petitioners' argument
that the Board was obliged to let them continue to argue on the alleged lack of
inventive step starting from document D1 despite the Board's conclusion not to
take that document as the closest prior art and starting point for the further
discussion of inventive step.Since the petitioners were given the opportunity to submit their arguments
with regard to the issue of determining the closest prior art, their right to be
heard has been observed. Once the Board had reached a substantive conclusion by
already excluding one or more documents (here: documents D1 and D11) as starting
points for the assessment of inventive step, it was logically consistent to
exclude all other prior art not found to be the closest prior art as starting
point for the further discussion of inventive step according to the second and
third stages of the problem-solution approach. By following this methodology the
Board did not infringe the right to be heard, because  as indicated above  a
party is not entitled to be additionally heard on the application of the
problem-solution approach starting from other pieces of prior art than the
closest prior art.
Hence, no infringement of Article 113(1) EPC was committed by the Board.

16. With regard to the second line of argument, the Enlarged Board notes that
there is no evidence to support the petitioners' allegation that the Board
failed to inform the parties of its intention to select document D2 as the
closest prior art and to invite the parties to comment on this so that they
might convince the Board of the inaccuracy of its choice.
Rather, there is evidence that the Board actually indicated the possible
selection of document D2 as the closest prior art, at a point in time during the
proceedings that still allowed the petitioners to react to it.
First, in its communication annexed to the summons to oral proceedings, the
Board explicitly pointed to document D2 as one of the documents to be considered
in the choice of the closest prior art.
Secondly, according to the minutes of the oral proceedings (pages 5 to 7) and
the Board's communication dated 10 January 2013, the discussion concerning the
determination of the closest prior art among all of documents D1, D2 and D11
started on 14 November 2012 and continued the next day. The parties were invited
to present their arguments. During the debate, the Board first indicated its
preliminary opinion in respect of the teaching of document D1 and continued the
discussion regarding the choice of the closest prior art. After deliberation,
the parties were informed that the Board considered document D2 to be the
closest state of the art and subsequently they were invited to address the
questions of what the objective problem starting from that document was and
whether that problem had been solved.For this reason, the Enlarged Board cannot find a basis for the petitioners'
allegation submitted with its second line of argument.

17. Concerning the third line of argument, that document D1 should also have
been considered as a realistic starting point for the discussion of inventive
step, the Enlarged Board cannot identify any procedural defect.The minutes of the oral proceedings show that the issue of whether or not the
document preferred by the petitioners (D1) was to be determined as an additional
starting point for the evaluation of inventive step was exhaustively discussed
with the parties (minutes, pages 5 and 6).
Furthermore, in the decision under review, the Board recapitulated in detail
the key arguments submitted by the parties, in particular the petitioners, in
this respect during the written as well as the oral proceedings (Facts and
Submissions points XII and XIII). The Board gave its reasons for not choosing
document D1 (as well as document D11) as the closest prior art and for
considering document D2 to be the starting point on the basis of which to apply
the problem-solution approach in order to decide on the issue of inventive step
(Reasons, points 4 and 10 et seq.).
The minutes further record an intervention by inter alia petitioner IV
against the Board's approach of determining only one single document as the
starting point for the discussion on inventive step, and also a request to give
the petitioners the opportunity to address inventive step of the subject-matter
of the first auxiliary request starting from document D1, which the Board
rejected (minutes, pages 6 and 7).Thus, the Board was obviously aware of the petitioners' arguments in favour
of document D1 as at least a second closest prior art document and gave reasons
why it came to a different conclusion (Reasons, points 4 and 10 et seq.).
Hence, the petitions, again, concentrate on the substantive decision of the
Board and on the petitioners' disagreement with the Board's determination of the
closest prior art as the starting point for the problem-solution approach when
assessing the issue of inventive step. The petitioners dispute neither the
sequence of events during the oral proceedings (the request for correction of
the minutes, although refused, confirms the petitioners' objection to the
Board's refusal to discuss the issue of inventive step starting from document
D1) nor the fact that the question of which document or documents were to be
chosen as the closest prior art was discussed first.
Their ground for review rather lies with the Board's substantive decision not
to take document D1 into consideration as a starting point in the subsequent
discussion of whether or not the claims according to the patent proprietor's
first auxiliary request involved an inventive step. It is this "refusal" that
the petitioners find to imply an infringement of their right to be heard. Their
argument is based on their opinion that, on the one hand, the Board was legally
bound by decision T 401/04 of 19 December 2006 regarding the choice of document
D1 as the closest prior art or that, on the other hand, from a technical point
of view document D1 should have been determined at least as a second starting
point for the discussion of inventive step.

18. Consequently, none of the three lines of argument by the petitioners can
lead to the conclusion that the petitioners did not have sufficient opportunity
to comment on all aspects on which the decision was taken, so that no
infringement of Article 113(1) EPC was committed by the Board.

19. To investigate any further would mean assessing whether the Board
correctly understood the substantive arguments submitted by the parties and,
above all, whether it gave the right answer to them. The (mere) fact that the
petitioners do not share the view of the Board and do not accept the outcome of
the decision under review would be a matter for a review of the merits of the
decision, which is not a means of redress provided for in the EPC.

20. Consequently, to the extent that the petitions for review are not clearly
inadmissible (see points 7 and 8 above), they are clearly unallowable.

[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:R000513.20140210. The decision was put online on 16.07.2014 The whole decision can be found here. The file wrapper can be found here. Photo "Hear No See No Speak No EVIL" by Billy Rowlinson obtained via Flickr , no changes made, CC by 2.0 license.

Thursday, 17 July 2014

The claimed
sensor is defined by reference to characteristics of its response when used in
a measurement set-up. Since none of the determining aspects of the measurement
set-up is defined in claim 1, the technical features of the claimed sensor
which are responsible for providing the measurement referred to in the claim
remain obscure.

Legal
certainty requires that a claimed subject-matter cannot be regarded as novel
over the prior art on the basis of an ambiguous feature. Hence, defining a
functional feature of the claimed sensor under undefined operating conditions
is not appropriate to provide any distinction of the claimed sensor over the
prior art sensors (see points 1.2 and 1.3 of the Reasons)

2.
Admittance of auxiliary requests

None of the
patentee's auxiliary requests were admitted into the proceedings because the
patentee, during the first-instance opposition proceedings, deliberately chose
not to defend any single auxiliary request, even though it was aware of the
fact that its main request had not been found allowable by the opposition
division (see points 2 and 3 of the Reasons).

Reasons for
the Decision

1. Main
request

1.1
According to the appealed decision, the sensor of D1 anticipates all the
features of claim 1. The patentee did not contest this finding except for the
following feature F of claim 1: "wherein the sensor provides a measurement
that correlates with the amount of analyte in a period of 10 seconds or
less".

1.2
Construction of claim 1

Claim 1 is
directed to a sensor as such, characterized amongst other features, by feature
F.

Firstly,feature F is not worded as a structural feature but as a functional feature of
the claimed sensor: "... the sensor provides a measurement ...".
However, a sensor in itself provides a signal as such but cannot provide a
measurement. It is the whole measurement set-up, using inter alia the sensor's
output signal, which provides the measurement that correlates with the amount
of analyte in a period of 10 seconds or less.

Furthermore,
the functional feature F refers to a numerical parameter: "... a period of
10 seconds or less". However, whether a measurement correlates with the
amount of analyte within the claimed range or not, depends not only on the
sensor but on the whole measurement set-up involved in the measurement.

Still
further, the functional feature F does not simply include language to the
effect that a measurement of the amount of analyte is provided within a certain
period of time but that the measurement correlates with the amount of analyte.
The term "correlate" generally means that the relationship between
the measurement provided and the amount of analyte to be measured is not as
expected on the basis of randomness alone. However, the degree of correlation
largely depends not only on the sensor but on the whole measurement set-up
involved in the measurement.

The
measurement set-up providing a measurement that correlates with the amount of an
analyte within a predetermined period of time includes the following aspects:

the type
and the concentration of the analyte to be measured by the claimed sensor,

the
constitution of the liquid sample containing the analyte, e.g. the nature and
the concentration of the perturbating interferants contained in the liquid
sample,

the
constitution of the reagent layer for producing an electrochemical reaction
with the analyte to be measured, e.g. the type of enzyme, the mediator,

the
material, size and geometry of the working electrode and the reference
electrode,

the
voltage profile applied to the sensor as described, for instance, in paragraph
[0032],

the exact
starting time of the measurement.

Each of the
above aspects of the measurement set-up influences the final measurement result
to a large extent.

Since none
of these aspects of the measurement set-up is defined in claim 1, the relevant
technical circumstances, under which the measurement referred to in the claim
is provided within 10 seconds or less, remain undefined. It follows that the
technical features of the claimed sensor which are responsible for providing
that measurement remain obscure, too.

1.3 Legal
certainty requires that a claimed subject-matter cannot be regarded as novel
over the prior art on the basis of an ambiguous feature (see T 1049/99, reasons
4.4). Hence, defining a functional feature of the claimed electrochemical
sensor under undefined operating conditions is not appropriate to provide any
distinction of the claimed subject-matter over the prior-art electrochemical
sensors, all the more so if these conditions influence the obtained result to a
large extent, as in the case at hand.

In view of
the fact that feature F does not delimit the claimed sensor from the sensor of
D1, it follows that the sensor of D1 anticipates the subject-matter of claim 1
(Article 54(1) and (2) EPC 1973).

[…]

2. First
auxiliary request

The board
holds that the first auxiliary request is not admissible under Article 12(4) of
the Rules of Procedure of the Boards of Appeal ("RPBA", OJ EPO
2007,537).

First-instance
opposition proceedings

2.1 At the
end of the first-instance oral proceedings, the patent was revoked for lack of
novelty of the claimed subject-matter with respect to D1. In advance of those
oral proceedings the patentee had filed a first auxiliary request whose claim 1
defined subject-matter which undisputedly overcame the novelty objection at
stake. This first auxiliary request then on file was identical to the first
auxiliary request being the subject of the present decision. However, after the
patent according to its main request had been revoked during the oral
proceedings, the patentee deliberately decided to either withdraw that
auxiliary request, or at least not to pursue it any further during the
first-instance proceedings. As a consequence, the decision of the opposition
division dealt only with the issue of novelty of a single independent claim,
i.e. claim 1 of the patent as granted, with respect to a single prior art
document D1. In particular, the opposition division was not in a position to
decide on any of the other numerous novelty and inventive step objections
raised by the opponent in its notice of opposition. These objections had a wide
scope since the subject-matter of claim 1, as well as that of various dependent
claims, according to the opponent's submissions, was anticipated or at least
rendered obvious by various prior art documents other than D1.

2.2 Due to
the patentee's course of action, the opposition division was effectively
prevented from taking a reasoned and sufficiently comprehensive decision on the
patentability of the claimed subject-matter over the cited prior art. This
issue was largely left unresolved given that the examination of the grounds for
opposition was limited to the mere novelty assessment of claim 1 as granted
with respect to D1. This is contrary to the purpose of Article 12(4) RPBA,
namely of encouraging parties to complete their relevant submissions during the
first instance opposition proceedings (see T 23/10, reasons 2.4 and 2.7).

Moreover,
the board is convinced that the patentee could easily have defended the first
auxiliary request in the first instance proceedings. Indeed, this auxiliary
request was not only filed in preparation of those oral proceedings, but also
did its claim 1 incorporate a straightforward amendment, which would have
undisputedly overcome the objection of lack of novelty at stake, as it merely
combined claim 2 as granted with claim 1 as granted.

2.3 If the
board decided to admit the first auxiliary request into the proceedings, it
would either have to assess the compliance of a set of claims with the
requirements of the EPC for the first time during opposition proceedings or to
remit the case to the opposition division. None of these two options is
satisfactory, be it due to the parties' general interest in having their case
heard by two instances or their general interest in the proceedings being
conducted in an efficient and foreseeable manner.

2.4 The
patentee, in deliberately choosing during the first-instance opposition
proceedings not to defend the patentability of the first auxiliary request then
on file, deprived itself of the possibility of having the request admitted into
the appeal proceedings (see T 144/09, reasons 1.9 and 1.14; T23/10, reasons
2.8).

2.5
Therefore, the board decides to exercise its discretion under Article 12(4)
RPBA in not admitting the first auxiliary request into the proceedings.

2.6 The
patentee presented the following arguments in favour of admissibility:

2.6.1 The
patentee did not withdraw the auxiliary request 1 at the first instance oral
proceedings. As explained in the patentee's letter dated 3 March 2014, the
patentee's representative, at the first instance oral proceedings, "stated
that he would not argue for the novelty of auxiliary request 1, but instead
reserve the right to reintroduce this auxiliary request in appeal
proceedings" and, as a response to a question by the chairman of the
opposition division, the patentee's representative "explicitly stated that
it was not to be withdrawn".

[…]

Whether or
not the patentee explicitly withdrew auxiliary request 1, however, is of no
fundamental importance to the present situation. The undisputed statement by
the patentee's representative in the oral proceedings before the opposition
division that "he would not argue for the novelty of auxiliary request 1,
but instead reserve the right to reintroduce this auxiliary request in appeal
proceedings" means in any case that it did not defend that request in
those oral proceedings. This approach amounted to the acceptance that the
patent be revoked by the opposition division without trying to defend it at
that stage.

It appears
that the patentee did not argue in favour of the novelty of auxiliary request 1
before the opposition division in the firm belief that the novelty debate would
automatically be taken up in the appeal proceedings in case the main request
would not be allowed. However, no legal basis for such an assumption exists. On
the contrary, admissibility of new requests depends on the board's discretion
aiming at fair proceedings for both parties, especially in the present case
where the facts and submissions had not changed from the beginning of the
opposition proceedings. Neither were new objections raised nor were new prior
art documents introduced into the proceedings by the opponent.

This
decision has European Case Law Identifier:
ECLI:EP:BA:2014:T087209.20140408.

Tuesday, 15 July 2014

This appeal reversed the opposition division's decision on clarity after the opponent introduced evidence to show lack of clarity.

Claim 1 of the main request concerned a method for conveying resistance to beet necrotic yellow vein virus
(BNYVV) to a sugar beet plant. The claim requires that "said resistance is a durable resistance and in which the virus does not replicate"

The durable resistance feature was first introduced in an auxiliary request filed during the oral proceedings of the opposition. One might have some reservation about what durable means exactly, but the opposition division had no problems with clarity. In the grounds for the decision the opposition division had this to say about the clarity of this term:

(...) a reference to the durable resistance must be understood as a reference to the properties of the plants obtained by said method. Any other interpretation would be technically meaningless. The Opposition Division also concluded that the term "durable resistance" was clear to the skilled person, i. e. it referred to resistance during essentially the whole life of a plant.

And I guess that is not unreasonable. Each field has its own terms, and I guess durable resistance can be distinguished in practice from other types of resistance. In fact the opposition division found the Claim not inventive because, inter alia, it is "common practice for the skilled person to look for the best, i. e. complete and durable, resistance and to screen for the complete absence of virus replication."In appeal, the opponent introduced a new document, which gives a nuanced view of durable resistance, which seems to have swayed the board.

5.
In comparison to claim 1 as granted, the Main Request requires the DNA
fragment used in step (a) of claim 1 to be "of at least 35 nucleotides"
(instead of 15 nucleotides) and the conveyed BNYVV resistance to be "a
durable resistance and in which the virus does not replicate" (cf. point
VIII supra). The term "durable resistance" was objected under Article
84 EPC for lack of clarity in the opposition proceedings and the
opposition division decided that the term fulfilled the requirements of
this article (cf. page 12, point 4.1.1 of the decision under appeal).

6.
In reply to the appellant's Grounds of Appeal, the respondent
maintained the objection of lack of clarity for the term "durable
resistance" and filed document D19 to support its arguments (cf. point
III supra). Document D19 is a general review which is, as its title
indicates: "A critical analysis of durable resistance", clearly
concerned with the objected term. Since the feature in claim 1
comprising the objected term was introduced for the first time with the
filing of an auxiliary request at the oral proceedings before the
opposition division, the board agrees with the respondent that there was
no opportunity to file document D19 at an earlier stage of the
proceedings (cf. point XIV supra).

7. Thus, the board, in exercise
of its discretion, decides to admit document D19 into the appeal
proceedings (Article 12(4) RPBA).

8. As for the objection under Article 84 EPC for lack of clarity of
the term "durable resistance", the board notes the following:

8.1
As argued by the respondent (cf. point XIV supra), there is no
definition for this term in the patent. In fact, several terms are used
in the patent, such as "total resistance" and "absolute resistance" (cf.
page 2, paragraph [0011], line 56, page 4, paragraph [0028], lines 44,
49 and 50, page 7, paragraph [0048], line 3 of the patent). However, the
patent does not define the precise meaning of each of these terms. In
the decision under appeal, the opposition division considered the term
"durable resistance" to be clear to a skilled person and it further
defined this term as meaning a "resistance during essentially the whole
life of a plant" without specifying any other limitation and/or
requirement (cf. page 12, point 4.1.1 of the decision under appeal).

8.2
This definition closely resembles the definition of this term given in
document D19, namely "a resistance that remains effective during its
prolonged and widespread use in an environment favorable to the disease"
(cf. page 309, first paragraph of document D19). However, document D19
refers to several elements for measuring and/or testing a "durable
resistance", including time (long), area (large), number of pathogen
races or subtypes, disease pressure, etc. and it further differentiates
between the effectiveness or level of resistance and its durability.
Indeed, it is explicitly stated that "(t)here is clearly a subjective
element in the decision to describe the resistance of a cultivar as
durable", further adding that "(i)n many instances the decision will
depend partly on the relative performance of other cultivars" (emphasis
added by the board) (cf. page 310, third paragraph of document D19).

8.3
The appellant, in its reply to the board's communication pursuant to
Article 15(1) RPBA, argued that a "demonstrated durable resistance
against BNYVV" is "evidenced by its progeny (i.e. with stable inherited
genome insertion)" (cf. inter alia, page 10, fourth paragraph, page 15,
last but one paragraph of the appellant's letter dated 18 April 2014;
point VI supra). This is also evident from the subject-matter
exemplified in the patent, where the bioassay for BNYVV resistance was
carried out using the transgenic F1 seeds (cf. page 6, Examples 2 and 3
of the patent). Although, as stated by the appellant (cf. point XIII
supra), the definition of the term "durable resistance" given in
document D19 and by the opposition division in the decision under appeal
did not exclude this further requirement, it did not necessarily
include it.

9. In the light of the factual situation described
above and under specific consideration of the arguments presented by the
appellant itself, the board concludes that the term "durable
resistance" has no generally accepted meaning in the here relevant
technical field and is thus open to interpretation. As such it is
ambiguous and renders the scope of claim 1 unclear. Thus, the Main
Request does not fulfil the requirements of Article 84 EPC.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T218410.20140520. The whole decision can be found here. The file wrapper can be found here. Photo by Derrick Tysonobtained via Flickr.

Friday, 11 July 2014

This is an appeal by an applicant (Novozymes A/S) against a decision of the Legal Division rejecting its request to resume the grant proceedings stayed pursuant to Rule 14(1) EPC. The grant proceedings were stayed at a late stage: only after the applicant filed (minor) amendments in response to a R.71(3) communication, a third party (Danisco US Inc) requested that the proceedings for grant be stayed pursuant to Article 61(1) EPC / Rule 14(1) EPC. The decision extensively discusses the requirements of Rule 14(1) (conditions for stay), Rule 14(3) (discretion of the EPO to set a date for resumption regardless of the stage reached in the national -entitlement- proceedings) and balancing all valid interest of the parties.

Tuesday, 8 July 2014

This appeal decision relates to re-establishment of rights in a case in which the 5th renewal fee was not paid.

In short, the circumstances of the case are: An European Patent Attorney monitored on behalf of his client the deadlines for the payment of the renewal fees and he had the task to remind his client when a renewal fee was due. The EP attorney used regular mail to remind his client. Three "normal" reminders were sent to a business address stored in his database. When a fourth reminder was sent by registered mail to the same business address, the letter returned and the EP attorney discovered that the business address was probably outdated. Subsequently he used another address (private address of contact person) stored in the database to send a fifth reminder by registered mail. No response was received to the fifth reminder which resulted in the non-payment of the renewal fee. Later, when the loss of rights communication was received by the EP attorney, the private address of the contact person was used again to inform the client of the loss of rights - that time the letter was received by the client. It seems that the fifth reminder was lost somewhere in the postal system. The EP attorney received about a year earlier additional contact details of the client (e.g. an e-mail address and a phone number) but this data was stored in the database and was not used by the EP attorney.

The receiving section concluded that the EP attorney had not exercized all due care.Citations from the decision:[...]

Reasons for the Decision

[...]

3. Allowability of the request for re-establishment of rights

[...]

3.2 Regarding the appellant's
responsibility, the board shares the opinion of the Receiving Section
that the appellant, i.e. Mr Goldberg as the responsible person within
the appellant's company, has exercised all due care.

3.2.1
According to the established case law of the boards of appeal, it has to
be taken into consideration whether or not the applicant is familiar
with the requirements of the EPC or is in possession of an established
office organisation attuned to ensuring that procedural deadlines are
met (cf. J 5/94 of 28 September 1994, Reasons 3.1; J 1/07 of 25 July
2007, Reasons 4.2).

3.2.2 As the Receiving Section correctly
pointed out, Mr Goldberg had no such office organisation, he relied upon
his US attorneys and - after they had resigned from representation -
upon his European representative. Mr Goldberg had no reason to
doubt that the European representative had his necessary contact
details. Additionally, he had provided his European representative with
his name, his office telephone number, fax and cell phone numbers and
his business email address. Particularly with regard to the renewal fee
for the fifth year, which is the subject of this appeal, he could expect
that his European representative would contact him by using the same
communication means as he had in respect of the renewal fee for the
fourth year. To put it another way, because of the experience of the
year before, Mr Goldberg had no reason to believe that his
representative would fail to contact him by using an outdated address.

3.2.3
Thus, based on the circumstances as they were at that time before the
expiration of the time limit for payment of the renewal fee for the
fifth year, the appellant exercised all due care to observe this time
limit.

3.3 Regarding the European representative's responsibility,
the board concludes that the representative too exercised all due care
to meet the missed time limit.

3.3.1 If an applicant is
represented by a professional representative, a request for
re-establishment cannot be acceded to unless the representative himself
can show that he has taken the due care required of an applicant or
proprietor by Article 122(1) EPC (cf. J 5/80 of 7 July 1981, OJ EPO
1981, 343, Headnote I). The applicant has to accept the actions of his
representative, including the actions of the attorney's assistants and
employees, on his behalf (J 5/80, loc. cit., 346; J 1/07 of 25 July
2007, Reasons 4.3).

3.3.2 However, the extent of the duties of the
representative depends on the agreement between the representative and
his client. An appointed representative whose authorisation is silent
concerning the payment of the renewal fees and who has not received any
funds for this purpose is not expected to pay the fee by advancing money
on behalf of the applicant out of his own pocket (J 16/93 of June 1995,
Reasons 4.3.3; J 19/04 of 14 July 2005, Reasons 10; J 1/07 of 25 July
2007, Reasons 4.4).Instead, he retains only a "secondary
responsibility" (cf. J 1/07 loc. cit.) to advise the applicant properly
either if the applicant addresses him or if he becomes aware of any
problem that might affect the applicant's position in respect of the
patent application. Thus his responsibility, above all, consists in
finding out what his client really intends to do with respect to payment
of the renewal fees (cf. J 16/93 loc. cit.). Since he remains
responsible in the procedure before the EPO and thus has to take the
necessary steps to ensure payment, this includes a reliable monitoring
system and sufficient reminders to the applicant (J 11/06 of 18 April
2007, Reasons 8; J 1/07 of 25 July 2007, Reasons 4.3).Accordingly,
the scope of duties of a representative who retains only such a
"secondary responsibility" to inform and advise his client with respect
to the due date for renewal fees cannot be the same as it would be if he
were responsible for the payment itself.

3.3.3 Without error of
law, the Receiving Section found that the "PT-204-Annuités" system was
in line with the requirements the EPC imposes on the due care of a
representative not in charge of the payment of renewal fees. The board
also agrees with the finding that the European representative applied
this system correctly by sending the first three reminders dated 12
June, 9 September and 8 October 2008 by regular mail to the Silver Lane
address.Nor can there be any objection to the fact that the
European representative sent the first three reminders by regular mail
to the Silver Lane address. From the European representative's point of
view, the Silver Lane address was still valid because this was the
address which he had received from the US representatives when he was
appointed in March 2006 and which was confirmed two years later when the
US law firm informed him that it no longer represented the appellant.The
appellant convincingly argued in the hearing before the board that in
2008 the use of regular mail had been standard practice in the European
representative's office. Emails or other means of sending letters (i.e.
fax) had been used only at the explicit request of the client. Since no
such request had been submitted by the appellant and because - up to the
return of the fourth reminder - the European representative had no
indication that there could be something wrong with the Silver Lane
address, there was no reason not to use regular mail and the Silver Lane
address.

3.3.4 The additionally sent fourth reminder, now issued
by registered mail and once again addressed to the Silver Lane address,
already went beyond the standard procedure laid down in the guidelines
("PT-204-Annuités") used in the representative's law firm. However,
because of the special circumstances of the case - i.e. the fact that
the fourth reminder was returned - at that point in time the European
representative had some reason to assume that the first three reminders,
sent to the same address, might have failed to reach the addressee, and
accordingly was obliged to try another route to contact the client.

3.3.5
In this situation the crucial question is whether or not the European
representative exercised all due care by sending the last (fifth)
reminder to the private postal address of Mr Goldberg.The
Receiving Section was right to assume that the use of Mr Goldberg's
business email address was a suitable way to get in contact with the
appellant because Mr Goldberg himself had used this address in order to
communicate with the European representative with respect to payment of
the fourth renewal fee only a few months before. On the other hand it
has to be taken into account that - according to the credible pleading
of the appellant - in the bureau of the European representative, in 2008
the sending of emails had not been a regular means of communication, so
that email addresses were not stored in his database. Furthermore, the
European representative - at the time when he sent the fifth reminder -
had no reason to believe that the postal address of Mr Goldberg - which
was stored in his database and which actually worked a short time later
when the European representative informed his client about the loss of
rights - could be wrong.Thus, with respect to the scope of the
mandate of the European representative, which amounted to nothing more
than monitoring the time limit and informing his client of the impending
loss of rights, the board considers it to be sufficient that he relied
on the postal addresses stored in his database instead of checking his
file for any other contact details.In this context, it has to be
observed that monitoring the due date for renewal fees and duly
informing the applicant is a mass business which nowadays can be - and
in practice is - most reliably performed on a computerised basis. In a
situation where the representative is not responsible for paying renewal
fees and thus only has a secondary responsibility, he can perform this
task on the basis of the database entries, unless special circumstances
require additional measures. In the present case, special circumstances
required the sending of an additional reminder. However, the
circumstances did not require the file to be checked for other contact
details, because the database contained an additional postal address
under which the applicant could be contacted. The fact that the fifth
reminder apparently got lost by mail cannot be blamed on the
representative. As has been shown, the Stanley Drive address worked,
since the loss-of-rights communication sent there was received by the
appellant.For that reason the board concludes that the European
representative exercised all due care by relying on the address data
stored in his electronic database.

3.4 Finally the board cannot
find that the appellant's US representative, who was not in charge of
payment of the renewal fee either, failed to exercise all due care.
Although - according to Mr Goldberg's statement in his affidavit dated
12 April 2012 - the appellant vacated the Silver Lane address around
June 2007 and despite the fact that the US representative still
mentioned the Silver Lane address in his letter sent to his European
colleagues informing them of his resignation from representation of the
appellant in March 2008, the board has no cause to assume that the US
representative had knowledge of the relocation of the appellant and thus
gave incorrect information to his European colleagues.Thus the board has no reason to assume that the US representative did not exercise all due care required by the circumstances.

4.
Thus, the appellant's request for re-establishment is allowable.
Accordingly, the appellant's auxiliary requests for remittal to the
department of first instance and referral to the Enlarged Board of
Appeal are redundant.

This decision has European Case Law Identifier: :
ECLI:EP:BA:2014:J000513.20140117. The whole decision can be found here. The file wrapper can be found here. Photo by Eirik Stavelin obtained from Flickr.

Friday, 4 July 2014

Two appeals for the price of one: an earlier appeal filed by the proprietor against the grant of its patent and an appeal -the subject of this decision- directed against what is purported to be a decision of the Examining Division set out in a letter dated 24 May 2012. Even though the Notice of Opposition seemed to be duely filed, well within 9 months from the date of mention of the grant, the letter stated that the Appellant's Notice of Opposition could not be considered as validly filed because the decision to grant was rectified by the Examining Division as a result of the earlier appeal.

Summary of Facts and Submissions

I. The appeal is directed against what is purported to be a decision of the
Examining Division set out in a letter dated 24 May 2012. This letter stated
that the Appellant's Notice of Opposition could not be considered as validly
filed.

II. The factual background to this decision involves two appeals: the appeal
which is the subject of this decision and which is mentioned above, and a
chronologically earlier appeal filed by the proprietor against the grant of its
patent.

III. The decision to grant the European patent No: 1358272 was notified to
the proprietor's representative on 16 February 2012. The EPO took this action
because it had in error deducted the fees for grant and publication from the
account of a firm of representatives that had ceased to represent the proprietor
in 2005 [albeit the automatic debit order was revoked per 26.10.05 - the latter was however overlooked by the EPO]. This erroneous action of the EPO led to the mention of grant of the
patent in suit appearing in the Patent Bulletin on 14 March 2012

IV. On 11 April 2012 the proprietor's representative filed a notice of appeal
and a statement of grounds of appeal against the decision to grant the patent,
"...prematurely and in error ...". The detriment that the proprietor claimed to
had suffered was that he was no longer able to file a divisional
application [and that the time limits for the costly step of validation were brought forward in time].

V. On 10 May 2012 the Appellant filed a notice of opposition against the
patent whose mention of grant had appeared in the Patent Bulletin on 14 March
2012.

VI. On 15 May 2012, the Examining Division informed the proprietor's
representative that it would rectify its decision to grant the patent and would
refund the appeal fee [interlocutory revision inder Article 109 EPC].

VII. In a letter dated 24 May 2012, the Formalities Officer, on behalf of the
Examining Division, informed the Appellant as follows:

"...

Following the appeal of 11.04.2012 the decision to grant dated 16.02.2012 was
rectified with EPO Form 2710 of 15.05.2012 and sent to EPO postal services on
08.05.2012.As the examination procedure is resumed, it is not possible to file an
opposition during this part of the procedure.Consequently your notice of opposition of 10.05.2012 cannot be considered as
validly filed.

For the Examining Division"

VIII. On 24 July 2012 the Appellant filed an appeal against the purported
decision of the Examining Division set out in the Formalities Officer's letter
dated 24 May 2012 and paid the appeal fee. A statement of grounds of appeal was
filed.

IX. The Appellant argued that it had fulfilled all the requirements for
filing a valid opposition. The interlocutory revision of the decision to grant
by the Examining Division took place subsequent to the filing of the opposition
and did not affect the validity of the filing of the opposition. The Appellant
referred to the principle of legal certainty in support of its position.

[...]

Reasons for the Decision
Admissibility of Appeal

1. The key issue to be decided is whether the Examining Division's letter of
24 May 2012 is a decision, or merely a communication. Whether a document is to
be considered as a decision depends on the substance of its contents, not on its
form - see J 8/81 OJ EPO 1982, 10, point I of Headnote and point 3 of the
Reasons. The criterion of substance has to be assessed in its procedural context
- see e.g. T 713/02 OJ EPO 2006, 267, points 2.12 and 2.14, second paragraph of
the Reasons.

2. Procedural context of the Examining Division's letter of 24 May 2012

2.1 In the present case a valid appeal against the decision to grant had been
filed by the Respondent-Proprietor after the publication of the mention of the
grant.

2.2 Article 106(1) EPC provides that an appeal shall have suspensive effect.
Thus, by filing a (valid) appeal against a decision to grant, an
applicant/proprietor prevents the decision to grant from having any legal effect
until the appeal is resolved. Otherwise an appeal would be nugatory (decision J
28/94, OJ EPO 1995, 742). If it is not possible to suspend or to defer the
publication of the mention of grant until such an appeal is decided, the EPO
should take all necessary steps to advise the public that the mention of grant
was no longer valid (see also T 1/92, OJ EPO 1993, 685, point 3.1 of the
Reasons). On the other hand, even after an appeal the decision as such remains
and can only be set aside or confirmed by the Board of Appeal (see J 28/03, OJ
EPO 2005, 597) or by way of interlocutory revision under Article 109(1) EPC.
This means that the validity of an opposition filed against the patent concerned
depends on the outcome of the appeal of the applicant/proprietor against
grant.

2.3 Thus, by the time the Appellant filed its notice of opposition, the legal
consequences of the decision to grant the patent had become subject to the
suspensive effect of the Respondent-Proprietor's appeal against the decision to
grant. As the Examining Division decided to rectify its decision to grant under
Article 109 EPC, neither this decision, nor the publication of mention of grant
had any legal consequences. Thus no granted patent is deemed to have existed
against which an opposition might have been filed. It is thus immaterial whether
or not the Appellant had fulfilled all the requirements for filing a valid
opposition.

2.4 In the light of this procedural situation, namely that there were no
proceedings in existence in which a decision could be made vis à vis the
Appellant, and from the plain wording used, the letter of 24 May 2012 is to be
seen as a mere communication of information, this information being that there
is no granted patent which may be opposed. This letter clearly makes no decision
on, nor reference to, the merits of the Appellant's opposition. That this
communication is the last word of the EPO on this subject does not imply that it
has decisional character; once the EPO has provided this information to the
Appellant no useful purpose would have been served by repeating it. Indeed, the
legal character of a document issued by the EPO (such as the letter of 24 May
2012) cannot be determined or altered by actions, or inaction, by the EPO after
it has been issued. Thus the Appellant's argument that the letter of 24 May 2012
is to be considered as a decision because the EPO did not subsequently issue a
further document in this matter is to be rejected. Moreover, under no
circumstances is an Examining Division empowered to decide on the "validity",
i.e. the admissibility of a (notice of) opposition. As the Appellant itself put
it in its letter dated 25 October 2012: the Examining Division is clearly and
simply the wrong instance for such a decision.

3. Article 107, first sentence, EPC provides that any party to proceedings
adversely affected by a decision may appeal. This provision thus contains the
requirement that there was a decision. As in the given circumstances the letter
sent by the Formalities Officer on behalf of the Examining Division did not
constitute a decision within the meaning of Article 106(1) EPC any appeal
against that letter is inadmissible.

4. As set out in point 3 above, the Board has concluded that there was no
decision. Thus the Appellant is not a person entitled to appeal under Article
107 EPC, and hence its appeal must be rejected as inadmissible in accordance
with Rule 101 EPC.

[...]

Order

For these reasons it is decided that:

The appeal is rejected as inadmissible.

[...]

EpilogueThe applicant paid the fee for grant and publishing, together with the fee for further processing, on 20.07.2012, and filed a new divisional (the fifth out of this application) on the same date.A new decision to grant was issued on 18.10.12, indicating that the mention of the grant would be published in the European Patent Bulletin of 14.11.12.Two oppositions were filed on 13.08.13, one day before the end of the opposition period - one by the same opponent as the above Appellant, one by another opponent.The dominos keep on falling...

This decision has European Case Law Identifier: ECLI:EP:BA:2013:J002212.20131107. The whole decision can be found here. The file wrapper can be found here. Photo by Jacqui Brownobtained via Flickr.Note: we usually discuss decisions that were made available online on the EPO website in the last week or so before our blog, whereas the above decision was put online on 07.04.14, shortly before we started to blog at a regular pace. However, I consider the above decision a quite unusual one, and therefore decided to put it on the blog.